Breaking Up Is Hard to Do

Paul Rodriguez explains some of the big challenges that accompanied RR Donnelley’s split into three independent companies and how he and the legal team helped handle them

In August 2015, Chicago-based RR Donnelley announced plans to execute a complex corporate transaction: a double spin. The integrated communications company contained a number of different services under its roof that it decided would be more capable as independent, publicly traded companies pursuing their own tailored business strategies: RR Donnelley (RRD), Donnelley Financial Solutions, and LSC Communications.


Paul Rodriguez, chief international counsel and chief intellectual property counsel for what would remain as RRD, immediately began preparing for the major three-way split. The breakup meant big changes and a lot of work for the RRD legal team, including the careful division of IP assets between the three soon-to-be-independent businesses, a series of global trademark searches for the new companies’ names, and a thorough accounting of the companies’ legal work streams.

Paul Rodriguez, RR Donnelley Photo by Sheila Barabad

Rodriguez, who joined RR Donnelley in 2007 after acquiring extensive IP litigation experience in both private practice and several other in-house roles, was well prepared to tackle the division of the company. His primary task was to divvy up the company’s thousands of IP assets, including trademarks and patents, and figure out which assets should be allocated to each new business entity. For assets that were used by more than one entity, decisions needed to be made regarding ownership and licensing. “We established a good process where we would raise up issues on a periodic basis to the executive team that would make decisions and set guidelines so that we would know how to go about accomplishing the goals of the spin,” Rodriguez says. “That worked quite well.”

Another pressing concern that consumed a substantial amount of time was the naming of the new companies. “Whenever you’re trying to clear a trademark on a worldwide basis,” Rodriguez says, “the odds that you’re going to get tripped up in any individual market increase substantially.”

Rodriguez says finding the right names, with an acceptable risk profile, was a tough challenge for the executive team. “As often happens in life, sometimes there seemed to be an inverse relationship between how clear a mark was and how much people liked it,” Rodriguez says with a laugh. “But, we finally came up with an agreed strategy and proceeded with our worldwide trademark filings.”

Once the split occurred, in October 2016, there were additional tests for the new RRD legal team. “We’re now roughly half the size of what we were before the spin, in terms of the number of attorneys and resources, but we still have 75–80 percent of the legal issues,” Rodriguez says.

But, though these circumstances could have been seen as setbacks, Rodriguez says, the team has instead embraced them and taken on new responsibilities and opportunities head-on. Even Rodriguez’s own role has increased in scope, and it now includes supervising all of RRD’s international legal team as well as legal oversight of data protection and cybersecurity issues.

As the team continues to settle in, Rodriguez plans to dive more heavily into his data-protection role, particularly to assist with compliance with the European Union’s General Data Protection Regulation, which went into effect in May 2018. “From the legal perspective,” he says, “we’ll play a big role in continuing to monitor the new regulations and helping provide the appropriate guidance so that the company will always remain compliant.”

Rodriguez says that RR Donnelley’s strength in integrating businesses through acquisitions over the years ultimately proved to be a double-edged sword when the company had to reverse-engineer the process for its double spin. But, in just over a year, the RRD team was able to successfully divide and conquer. “We had to make sure that after the spin,” Rodriguez says, “each company, on day one, would be able to stand up and be its own independent company.”

Getting Ahead with HACE

Since 2017, Rodriguez has also been on the board of the Hispanic Alliance for Career Enhancement (HACE). In 2016, RR Donnelley was asked to provide a panel member for a summit for the group; Rodriguez was tapped, and his interest in the organization grew as he spoke with professionals who had gone through the program.

“One of the things that really impressed me about HACE as an organization is the sweet spot it hits for entry- and midlevel professionals and the help it provides to advance Latino professionals in their careers, including resources, seminars, and networking opportunities,” Rodriguez says. The group also has programs for high school and college students.